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[Fwd: PATNEWS: Patent abstracts, Eolas workaround, filewrapper estoppel]

From: Jeffrey Altman <jaltman@columbia.edu>
Date: Wed, 10 Sep 2003 14:54:51 -0400
Message-ID: <3F5F737B.3070108@columbia.edu>
To: public-web-plugins@w3.org
Greg has an interesting take on the patent which may provide Microsoft a 
huge loophole to avoid future claims.

- Jeff

attached mail follows:

!20030910  Patent abstracts, Eolas workaround, filewrapper estoppel

    --  Patent application with 7200 claims
    --  PTO to no longer ignore abstracts for claim scope interpretation
    --  A workaround of the Eolas patent for Microsoft?
    --  Question on filewrapper estoppel
    --  Judge 'slaps hands' of Niro Scavone for filing frivolous request

Greg Aharonian
Internet Patent News Service



Have you heard of this patent application yet?  Over 7200 claims pending
in the published app....  How much would THAT cost??

U.S. Patent App.   20030100451                       Published 29 May 2003
Shell Oil
In situ thermal recovery from a relatively permeable formation with
    backproduction through a heater wellbore

What is claimed is:

1. A method of treating a relatively permeable formation containing heavy
hydrocarbons in situ, comprising: providing heat from one or more heat
sources to at least one portion of the formation; allowing the heat to
transfer from the one or more heat sources to a selected section of the
formation; controlling the heat from the one or more heat sources such
that an average temperature within at least a majority of the selected
section of the formation is less than about 375.degree. C.; and producing
a mixture from the formation.



A PATNEWS reader sent me the following observation:


    It now looks like 37 CFR Section 1.72(b) has been amended to delete
    the last sentence in the rule ("The abstract will not be used for
    interpreting the scope of the claims.") to be consistent with Hill
    Rom Co. v. Kinetic Concepts, Inc., 209 F.3d 1337, 1341 n.* (Fed. Cir.

    I didn't catch that one anywhere...  Did you?  I saw it in a
    presentation by Bob Spar of the USPTO entitled "Image File Wrapper
    Final Rule".  I didn't see it anywhere else.  It was buried on page

    I happen to think this is a big deal.

Another PATNEWS reader sent me more information:

    It has been PTO policy up to now to put applicants on notice that
    the abstract would not be used by them for claim scope interpretation.
    That was actually a very reasonable policy, since the PTO treated
    an abstract as a very plastic document during patent examination,
    even going so far as to give examiners authority to amend the abstract
    in major ways, even without approval by the applicants. This was
    considered permissible in order to make sure that an abstract contained
    enough information for a later examiner to better retrieve the patent
    (once issued) during a later examination. (Snicker snicker: this was
    observed in the breach).

    Be that as it may, as long as the abstract was not guaranteed to be
    the word of the applicants themselves, but rather as interpreted
    by examiners, then it should not be considered as in claim scope

    Now, if the CAFC is going to use abstracts as claim scope interpretation
    tools, then the PTO can not afford to allow examiners to tinker with
    abstracts. In a prospective sense this is OK.

    BUT: what should the PTO do in cases where they are using some very
    old patent, where they want to use that patent as prior art in some
    rejection, but they KNOW the abstract in that case has been fiddled
    with??!!! (This could occur if the same examiner who issued that
    now-prior art patent is examining some later application).

    What if they use some examiner-mangled abstract in a prior art
    rejection? It would be better if the PTO changed their rule in a date
    sensitive manner. To wit, treating the abstract of a patent issued
    after HILL-ROM in a way different from one issued prior.

    Does this make any sense to practitioners out there?



Hi Greg,

    As we all have read, Microsoft has indicated that it will probably
make some changes to IE in light of the founding of infringement on the
Eolas patent. It's interesting that despite the high profile status of
this case, I haven't found any discussions or speculation on the Web as to
what might possibly be the changes to IE that Microsoft is contemplating.

    I did some research of my own, and read the opinions in the Eolas case
to guess what Microsoft would do. This is my take on the IE change. From
what I understand from the Markman opinion in this case, Microsoft can make
a simple change to IE that would transparent to the end-user, and would be
an effective work-around of the claims in the Eolas patent. This is the
limitation that is the weak point of Eolas and advantageous to Microsoft:

    "wherein said object has type information associated with it utilized
    by said browser to identify and locate an executable application"

    According to the claim-construction of the court the limitation
"utilized by said browser" means that the browser is what does the function
of identifying and locating the external application. All Microsoft needs
to do is to remove this function from the browser and rather recreate it as
a function in the Windows OS. For example when the browser reads the "type
information" for Shockwave application it refers the type information to
a component in the OS, which further performs the function of identifying
and locating the application. It's as simple as that IMO. This would be
transparent to the end-user.

    So nothing to worry about losing embedded apps from browsers..



Dear Greg,

    I would like to know if you have come across any US jurisprudence
concerning the effects of prosecution history estoppel and contributory
infringement and/or induced infringement. For example, during prosecution
of a patent application, one drops product claims, and a patent is granted
for method of using said product. The infringement occurs when one uses
our formerly claimed product (ie. the claims that were dropped) and
naturally use our claimed method.

    Would you happen to have any information that could lead to a better
understanding of how the courts view prosecution history estoppel and
contributory infringement in this context... post Festo.

[GREG note: anyone who has an answer, please send it to me and I will
forward it.]



As you recall, Niro Scavone is the law firm whose client sued me for patent
infringement, AND LOST, a lawsuit that said a fair number of insulting
things about me, that last time I looked, had nothing to do with patent
infringement litigation.

Another Niro Scavone client is suing Microsoft, and recently Niro Scavone
lawyers filed such a frivolous motion that the judge not only rejected
their motion, but did so really sarcastically.  Here is the judge's
rejection decision.


Hyperphrase Technologies, Hyperphrase Inc
    v.                                            ORDER 02-C-647-C
Microsoft Corporation

   Pursuant to the modified scheduling order, the parties in this case
had until June 25, 2003 to file summary judgment motions.  Any electronic
document may be e-filed until midnight on the due date.  In a scandalous
affront to this court's deadline, Microsoft did not file its summary
judgment motion until 12:04:27 a.m. on June 26, 2003, with some supporting
documents trickling in as late as 1:11:15 a.m.  I don't know this
personally because I was home sleeping, but that's what the court's
computer docketing program says, so I'll accept it as true.

    Microsoft's insouciance so flustered Hyperphrase that nine of its
attorneys, namely Mark A. Camelli, Lynn M. Stathas, Andrew W. Erlandson,
Raymond P. Niro, Paul K. Vickrey, Raymond P. Niro Jr., Robert Greenspoon,
Matthew G. McAndrews, and William W. Flachsbart, promptly filed a motion
to strike the summary judgment motion as untimely.  Counsel used bolded
italis to make their point, a clear sign of grievous iniquity by one's

    True, this court did enter an order on June 20, 2003, ordering the
parties not to flyspeck each other, but how could such an order apply
to a motion filed almost five minutes late?  Microsoft's temerity was
nothing short of a frontal assault on the precept of punctuality so
cherished by and vital to this court.

    Wounded though the court may be by Microsoft's four minute and
twenty-seven second dereliction of duty, it will transcend the affront
and forgive the tardiness.  Indeed, to demonstrate the even-handedness
of its magnanimity, the court will allow Hyperphrase on some future
occasion in this case to e-file a motion four minutes and THIRTY
seconds late, with supporting documents to follow up to SEVENTY-TWO
minutes later.

    Having spent more than that amount of time on Hyperphrase's motion,
it is now time to move on to the other Gordian problems confronting
this court.  Plaintiff's motion to strike is denied.

    Entered this 1st day of July 2003,  BY THE COURT:

    Stephen L. Crocker, Magistrate Judge


You just have to love this judge.  Judge Crocker, if you ever make it
to San Francisco, beer is on me.

Received on Wednesday, 10 September 2003 14:57:02 UTC

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